Blog

07/23/15
Phantom Marks

When filing for a trademark, it is important to remember that you are filing for the mark as you use or plan to use it. That is, you can only file for one mark per application. For example, if you have a stylized trademark where you have one word stacked over another, while the other version has the words side by side, although the marks share identical wording, the USPTO will consider that to be two different and distinct trademarks. The same situation applies for word marks — applying for the mark TRADEMARK in one application versus use of the term TRADE MARK will be considered two separate marks.

Keeping that in mind, some applicants may try to file a trademark application where most of the mark remains consistent, but includes a changeable element. For example, an applicant may file an application for the mark TRADEMARK 19, in an effort to secure trademark protection when they use the trademark as TRADEMARK 1985 or TRADEMARK 1999. When you file for a trademark but actually use that mark with changeable element as discussed above, you may have filed an application for something called a "phantom mark."

Aside from certain scenarios, a phantom mark is not registrable. Namely, U.S. trademark law prohibits the registration of more than one mark in an application. That is, if the mark in your trademark application can function as two or more marks, it is possible that the USPTO would reject the application on that basis. These types of rejections occur when an applicant files a statement of use or specimen which shows the mark being used with the changeable element(s). Phantom elements in marks generally involve a date (usually a year), a geographic location, or a model number that is subject to change.

Remember that the primary purpose of registration is to provide notice to potential users of the same or a confusingly similar mark, and that to serve this purpose, the mark, as registered, must accurately reflect the way it is used in commerce so that someone who searches the registers of the USPTO for the mark, or a similar mark, will locate the registered mark. As such, when seeking to apply for a trademark, it is imperative that you file that application for a mark as a whole without any changeable elements. Including changeable elements in an applied-for trademark can counter the basic trademark rule that an application must be limited to only one mark.

#mondayblogs

07/13/15

FTC Enforcement of Unfair and Deceptive Advertising in a Crowdfunding Campaign

The Federal Trade Commission (FTC) has brought its first successful case against a crowdfunded company for unfair and deceptive advertising.

Section 5 of the FTC Act (15 U.S.C. §45) prohibits ‘‘unfair or deceptive acts or practices in or affecting commerce.’’ The prohibition applies to all persons and companies. Frankly, most cases the FTC brings for violations of Section 5 of the FTC Act are successful – most defendants do not challenge the FTC or its findings.

An act or practice is unfair where it

Causes or is likely to cause substantial injury to consumers,

Cannot be reasonably avoided by consumers, and

Is not outweighed by countervailing benefits to consumers or to competition.

An act or practice is deceptive where

A representation, omission, or practice misleads or is likely to mislead the consumer,

A consumer’s interpretation of the representation, omission, or practice is considered reasonable under the circumstances; and

The misleading representation, omission, or practice is material.

In Federal Trade Commission vs. Erik Chevalier, Chevalier was also doing business as The Forking Path, Co. According to the FTC’s complaint, Erik Chevalier, also doing business as The Forking Path Co., sought money from consumers to produce a board game called The Doom That Came to Atlantic City that had been created by two prominent board game artists.

According to the FTC’s complaint, Chevalier represented in his Doom campaign on Kickstarter.com that if he raised $35,000, backers would get certain rewards, such as a copy of the game or specially designed pewter game figurines. He raised more than $122,000 from 1,246 backers, most of whom pledged $75 or more in the hopes of getting the highly prized figurines. He represented in a number of updates that he was making progress on the game. But after 14 months, Chevalier announced that he was canceling the project and refunding his backers’ money.

Despite Chevalier’s promises he did not provide the rewards, nor did he provide refunds to his backers. In fact, according to the FTC’s complaint, Chevalier spent most of the money on unrelated personal expenses such as rent, moving himself to Oregon, personal equipment, and licenses for a different project.

What was defined as unfair and deceptive was taking the crowdfunding money and not using the money to give consumers what was expected – pewter game figurines.

Under the settlement order Chevalier is prohibited from making misrepresentations about any crowdfunding campaign and from failing to honor stated refund policies. He is also barred from disclosing or otherwise benefiting from customers’ personal information, and failing to dispose of such information properly. The order imposes a judgment of $111,793.71.

What is fascinating about the case is not that it is based in new media. In all reality, this set of facts could be applied to any basic violation of Section 5 of the FTC Act. A product producer makes a promise to induce consumers to pay, but no product is actually produced or sent to those consumers who paid. The only difference is that this situation was a part of a crowdfunding campaign.

There have been many reports of consumers who are dissatisfied about various crowdfunding campaigns. This is only the first report of FTC enforcement, but there are bound to be more.

Do you have questions about unfair and deceptive advertising standards? Does your business advertise on any medium? Talk to us at W.R. Samuels Law – 212-206-9399#mondayblogs

2015 New York Metro Super Lawyers and Rising Star List

Bill Samuels has been selected to the 2015 New York Metro Rising Stars list for the third year. The 2015 New York Metro Super Lawyers and Rising Star lists will be included in The New York Times on October 4, 2015.

W.R. Samuels Law will be featured in Forbes Legal Black Book coming out May, 2015.

03/10/15

Bill Samuels will be speaking at "Trademarks A to Z: From Clearance Search To Litigation" for the New York State Bar Association on Friday, April 24, 2015.

02/26/15

11/20/14

Bill Samuels will be speaking at "A Primer on Intellectual Property" on November 20th for the Intellectual Property Section of the New York State Bar Association. For more information: http://www.nysba.org

11/12/14

My motivation is to use the power of the moustache to have an everlasting impact on the face of men’s health. 1 in 7 brothers, fathers, grandfathers, and friends around the world will be diagnosed with prostate cancer. I am growing a moustache to spread awareness and raise funds for this important cause.

06/28/13

We have moved! Please visit us at our new location:

280 Madison Avenue, Suite 600
New York, New York 10016

12/17/13

Bill Samuels Named Top 40 Under 40

In addition to being named a New York Metro Super Lawyer Rising Star for 2013, firm founder Bill Samuels was recently named one of the Top 40 Under 40 IP lawyers in New York for 2014 by the American Society of Legal Advocates (ASLA). ASLA is an invitation-only organization that through its vetting process ultimately selects less than 1.5% of lawyers nationally.

10/24/13

Supplemental Register: No Publication, So Then What?

For those who have filed for a US federal trademark registration, you know that once your application has been approved by the Examining Attorney it is then published for opposition by any party that thinks it would be injured by registration of your mark. The opposition period lasts 30 days and it gives trademark rights holders an opportunity to protect against registration of a mark that might narrow the breadth of their rights. But what about the Supplemental Register? Marks that don’t qualify for a full registration because they are descriptive or lack some level of distinctiveness can register on the Supplemental Register. So, registration of a such mark on the Supplemental Register is a good option for the applicant as it allows for use of the "®" when the mark is used with the products or services listed in the registration. There are other upsides, plus amendment to the Supplemental Register is not an admission that the mark is not distinctive. So what if someone registers a confusingly similar mark on the Supplemental Register without giving you the chance to oppose that registration? Well, if a third party objects to an application for the Supplemental Register, it must attempt to cancel the registration after it issues. From there it is up to the Trademark Trial and Appeal Board to determine whether the mark remains registered or it is cancelled. That’s your option: file a cancellation and lay out the basis for taking the mark off the Supplemental Register.

10/01/13

Govt. Shut Down, USPTO Open for Business

With all the attention being paid to the US government shutdown, there are a number of agencies still operating and the USPTO is one of them. It’s business as usual: keep apprised of deadlines and work to secure priority for your filings. - See more at: http://wrsamuelslaw.com/category/blog/#sthash.C7Va4Kr6.dpuf

Surely there will be more to come and few are sure what tomorrow will bring…But for now the USPTO is open for business.

Congrats to WRS Client, Million Dollar Shopper Amy Salinger

09/13/13

Founder Bill Samuels Named Super Lawyers: NY Metro Rising Star

Today Bill Samuels was named a Super Lawyers: NY Metro Rising Star. Super Lawyers recognizes the top lawyers in the New York Metro area. Attorneys are selected via peer nomination, independent research and peer evaluation. While up to five percent of the lawyers in a state are named to Super Lawyers, no more than 2.5 percent are named to the Rising Stars list. - See more at: http://wrsamuelslaw.com/category/blog/#sthash.GPmTSWU9.dpuf

In April 2013, the Super Lawyers selection process received a patent (U.S. Pat. No. 8,412,564) from The United States Patent and Trademark Office, demonstrating credibility as an impartial third-party rating system

09/08/13

Design Patents in a Nutshell

Design patents protect the ornamental design of a functional item. While there is certainly some overlap in the types of protection one can use to protect such ornamentation, design patent protection can cover an array of subject matter, including jewelry, containers, computer icons, packaging, electronics, fonts, and the list goes on…

To qualify for design patent protection, the design must be new, original, and ornamental. In turn, that protection prevents any third party from making, using, or importing into the United States a product with a design that is substantially similar to the design claimed in a design patent.

There’s more to it, but the first step is to identify the issues and determine if design patent protection is a viable option.

There’s more to it, but the first step is to identify the issues and determine if design patent protection is a viable option. It’s a great option to keep in mind.

09/04/13

Phones Back Up

For anyone trying to reach us by phone yesterday, our phones were down but they are back up again. Apologies for any inconvenience. Please always feel free to reach out via e-mail. Thanks!

08/08/13

Multi-Class US Intent-to-Use Applications & Statements of Use

Have a US trademark application that has been granted a Notice of Allowance in multiple classes but you’re not using in all of the classes? Want a registration in the classes where you have use?

In this type of situation, you can split out the class(es) of goods where you don’t have use by filing a "Request to Divide." Then, upon dividing out the classes without use, for the classes where you do file the Statement of Use the USPTO will issue a registration. The remaining class(es) of goods that were divided out will have been assigned a new serial number, separate from the "parent" application. Down the road when you have use with the goods/services covered in the new application, you can file another Statement of Use and a separate registration will issue for those classes.

So, rather than an updated registration, you would have two registration certificates covering the mark in the respective classes.

08/02/13

Go Ramen! WRS Law Client to Be on GMA

Keizo Shimamoto will show his innovative Ramen Burger on Good Morning America Saturday, August 3. Tune in or try one at Smorgasburg in Brooklyn later in the day.

07/26/13

We’re Moving!

W.R. Samuels Law PLLC is relocating!

We are moving our offices beginning August 1, 2013. Please take note of our new address and phone number, and reach out any time we can be of assistance:

8 West 40th Street
12th Floor
NewYork,NY 10018

(212) 206-9399

05/20/12

Speaking in Marks: Social Identifiers in the Online Space—Business, Personal & Both at the Same Time

The more we communicate electronically, the more we are identified by name, by handle, by symbol, or another identifying character. And, from there, more often than ever before, we are communicating via a mark of some sort. As I harp on it, time and again, from a legal standpoint a mark is an indicator of source. It is an identifier of who or what provided goods or services. And services include providing information and communication to others. That means each of us who is online has a mark of sorts in the online electronic world.

So, where your face or voice in an in-person interaction will surely identify you as the source to others on the receiving end of that in-person communication, in the online world your handle or other identifier will do that for you. In the off line world, others can have the same name as you, but online if someone were to have your same twitter handle or e-mail address as their own, we would call that hijacking, squatting, hacking, or stealing. Someone can look just like you in the off line world, but they cannot have your same name online; too much confusion would ensue. With highly similar online names and addresses, such confusion already happens. But you can choose your online mark–and in that space communication, connection, and information reign supreme. Tone and delivery are the online body language. That being the case, in the connected electronic world, where marks do much of the talking and representing, indicators of source are more important than ever.

As for how this fits under the law and connects with trademarks, service marks, collective marks, etc., you’d want to consider whether and how a particular mark has been used in commerce. That’s a topic for continued thought and discussion…and special analysis based on your use, intended use, and overall plan…because, like the off line world, use online and even in social media contexts can take on different forms: sometimes it’s business, sometimes it’s personal, and sometimes it’s a little of both.

05/07/12

INTA 2012: Another Day, Another Mark

Some thoughts from INTA…And pictures from the exhibition hall…

People often wonder about the real value of a trademark. But marks are unique, and their value is based on how they are "built." That is, the value of the mark is based on what the mark represents–what it embodies and what it encompasses. So, obviously, the Coca Cola trademark is incredibly valuable. But does that mean a mark currently without an actual product or service connected to it is without value? The answer is no.

So, what if you haven’t launched the business or the product? What if you’re not offering the service? How much is the mark worth then? You have an idea of what mark you plan to use, but wonder how it can be worth investing time and money in a mark for a product or service that may not succeed… more often than not, protecting and securing that mark is an integral part of being able to communicate the value of the product or service you are launching. Your target audience can identify with a mark and a brand quite easily, but not necessarily with nuance and complexity of your offering without the trademark delivery vehicle–the mark can bear the complex nuanced message and identity in its simplicity. Think about what "GE" really means and represents.

A mark embodies the idea of what you want your target audience to understand. The mark is your flag. Whether your business is the equivalent of a fledgling nation or an established world leader, the identification–the good will–can develop and change over time and your audience will perceive and understand those changes through your mark.

Prepare your banners before entering the field of competition. Consider the products you want to sell, the service you want to provide, and the mark you can use to identify and communicate your message.

05/06/12

INTA 2012: Washington, DC

The International Trademark Association (INTA) Conference has begun. Approximately 10,000 trademark and intellectual property professionals from around the world are meeting in Washington, DC, to discuss the state of global trademark law, the business of trademarks and intellectual property (IP), and the future of business and IP in an increasingly global economy and a world that has been made smaller as a result of greater and more reliable Internet connectivity, mobile networks, and all that comes along with it.

While discussion continues regarding traditional trademark topics, including brand strength and international registrations, the Internet and technology appear to dominate the conversation these days. Topics include registration of generic top-level domains (gTLDs), social media and the leverage trademarks and brand identification can provide in that arena, as well as the hot button issue of trademarks and their sale and use in search engine key word and advertising programs.

Fear not brand owners. I know you may have difficulty sleeping in knowing you were not able to attend the conference yourselves. But I’ll keep you posted about developments from here at the exhibition hall.

More to come…

02/28/12

Proview International Holdings Ltd. Has Sued Apple for Fraud over iPad Mark

Proview International Holdings Ltd. claims that Apple Inc. intentionally misled it into into selling the iPad mark for £35,000. What Apple apparently did was form the company "IP Application Development Ltd.," claiming the mark was an acronym for its company name. Proview filed its complaint on February 17 in California Superior Court, Santa Clara County.

Proview claims in the complaint that in 2000 it had registered versions of the iPad mark; Apple then incorporated IP Application Development Limited in the UK to acquire the mark. At that time, IP Application Development Limited allegedly told Proview the mark was an acronym for its name, and that it would not use the mark to compete with Proview.

One month after acquiring the mark, Apple launched the iPad.

02/27/12

W.R. Samuels Law Interviewed re: Linsanity

With all the craziness surrounding Jeremy Lin and the New York Knicks, I never thought I’d have any reason to get involved. Well, in full disclosure, I didn’t really get involved. But I did speak with AOL’s Ross Urken, writing for Daily Finance, about trademark matters, some of the practical issues Jeremy Lin will face as a trademark owner, and whether someone else might have a claim to the mark LINSANITY.

11/15/11

UDRP & Domain Name Dispute Process

What is the UDRP?

The Uniform Domain-Name Dispute Resolution Policy (UDRP) is an arbitration process available to the public for addressing domain name squatters and other disputes over domain name ownership. The process is applicable across all General Top Level Domains (gTLDs), such as the gTLD ".com" Under the UDRP process, in certain circumstances you can seek to force a cyber squatter or trademark infringer either to transfer a domain to you or cancel their registration altogether.

What Do You Need to Show?

First, you need trademark rights. A registration demonstrating those rights is always very helpful. So, you specify the trademark(s) or service mark(s) on which the complaint is based. You provide, for each mark, the goods or services, if any, with which the mark is used or with which you intend to use the mark at the time the UDRP complaint is submitted.

Next you will need to describe the grounds on which the complaint is made. In particular you will need to show:

The manner in which the domain name(s) is/are identical or confusingly similar to a trademark or service mark in which you have rights; and

Why the current domain registrant should be considered as having no rights or legitimate interests in the domain name(s); and

Why the domain name(s) should be considered as having been registered and being used in bad faith

So, You Get it All Together: What happens Then?

Generally, the Arbitration Forum will examine the Complaint to determine whether it conforms to the rules, etc. If, for some reason, they say it doesn’t, you generally will get a chance to fix any issues. This should take about three (3) days.

Once approved, the Forum will send the official Complaint to the offending registrant (the "Respondent"), and they will have twenty (20) calendar days, depending on the forum, to submit a Response to both the Forum and to you.

If Respondent does not file a response, then it would be in default. The Arbitration Forum will then make a decision based solely on your complaint. Also, a default is seen as another sign of bad faith registration and use of the domain (Good for you!).

An arbiter will be appointed within five (5) calendar days of either (1) Respondent’s response filing or (2) Respondent’s default.

A panel decision comes out within fourteen (14) calendar days of its appointment by the Forum.

Keep in mind that rules and time frames are open to change, but a UDRP action can be much swifter and less expensive than alternative litigation.

Please note that this blog entry is for informational purposes only and is not legal advice and should not be construed as legal advice. Nothing herein is meant to create an attorney-client relationship.

08/01/11

Copyright & Integrity for Creators

by W.R. Samuels

There is a lot of chatter continuing in the world of copyright. And, as has been the case for some time, that discussion revolves around money only and not necessarily rights of creators and fairness toward them. The issue seemingly most often raised is how much money is generated through copyrights, fair use of creative works of authorship, and balancing the two against one another.

Now, copyright is granted under the Constitution in the Intellectual Property Clause, Article 1, Section 8, Clause 8, in order to provide an ownership incentive to people to create and innovate and share their creations with the public without the fear of them being stolen. That original grant of copyright was 14 years, which is much shorter than the current copyright term of life plus 70 years, the lengthening of which had little to do with incentive to create and share and more to do with financial concerns.

Why does this matter? Well, for the sake of commentary, it matters because the argument has become about money and not about the core justifications for protecting creative works. Moreover, the discussion has little to do with ownership and more to do with demonstrating how much money one side has lost from "piracy" and how much creativity another group can show has thrived where someone’s copyrighted property has been used without permission, whether "fairly" or not. Just because someone can generate more money from taking a painting or creative work from someone else doesn’t make that stealing a justifiable act. And just because you can download or share information and you can grow the economy by doing so does not, legally and ethically speaking, justify taking that information or file and your copying and sending it to others.

Free flow of information should be a goal and essentially is the value that the Internet facilitates and creates. But intentional stealing or taking of another’s work is, at base, unfair. Groups like Creative Commons (www.creativecommons.org) recognize this—protection of artistic integrity is important for creators. How a copyright is licensed or enforced is a whole other subject. But, while the world debates enforcement, strength of laws, and how a copyright regime should be structured, we should all be aware of what is fair for the creators out there. They do not have to share any of their works with us and providing some protections to creators is just the incentive for them to share. Copyright claims may surely be out of control, and fair use under severe attack from all sides, but it is essential that fairness rules the day. Consumers cannot get everything for free and authors and copyright owners need to embrace new ways of doing business and models for delivering content access in a seamless-experience manner at a price point people generally can accept and even enjoy.

08/1/11

Mexico Changes Requirements for TM and Slogan Applications

by W.R. Samuels

It’s critical to keep up with local laws when managing an international trademark portfolio. Recently, due to amendments to the Regulations of the Mexican Industrial Property Law, parties doing business in Mexico and seeking protection for word marks and slogans there should know whether they will qualify for word mark protection.

To qualify as a word mark, that mark must be composed only of characters or letters corresponding to the Roman alphabet (e.g., A, B, C…), Arabic Numbering (e.g., 1, 2, 3…), and orthographic symbols which help correctly read the mark (e.g., – , . ‘ ¿? ¡! " " …).

If marks include other symbols (e.g., & # @ \ + …) the Mexican IP Institute will require amending the mark to a Design Mark. This may not seem like a major issue, but filing properly will save time in prosecution and help you avoid potential pitfalls down the road.

There is a lot of chatter continuing in the world of copyright. And, as has been the case for some time, that discussion revolves around money only and not necessarily rights of creators and fairness toward them. The issue seemingly most often raised is how much money is generated through copyrights, fair use of creative works of authorship, and balancing the two against one another.

Now, copyright is granted under the Constitution in the Intellectual Property Clause, Article 1, Section 8, Clause 8, in order to provide an ownership incentive to people to create and innovate and share their creations with the public without the fear of them being stolen. That original grant of copyright was 14 years, which is much shorter than the current copyright term of life plus 70 years, the lengthening of which had little to do with incentive to create and share and more to do with financial concerns.

Why does this matter? Well, for the sake of commentary, it matters because the argument has become about money and not about the core justifications for protecting creative works. Moreover, the discussion has little to do with ownership and more to do with demonstrating how much money one side has lost from "piracy" and how much creativity another group can show has thrived where someone’s copyrighted property has been used without permission, whether "fairly" or not. Just because someone can generate more money from taking a painting or creative work from someone else doesn’t make that stealing a justifiable act. And just because you can download or share information and you can grow the economy by doing so does not, legally and ethically speaking, justify taking that information or file and your copying and sending it to others.

Free flow of information should be a goal and essentially is the value that the Internet facilitates and creates. But intentional stealing or taking of another’s work is, at base, unfair. Groups like Creative Commons (www.creativecommons.org) recognize this—protection of artistic integrity is important for creators. How a copyright is licensed or enforced is a whole other subject. But, while the world debates enforcement, strength of laws, and how a copyright regime should be structured, we should all be aware of what is fair for the creators out there. They do not have to share any of their works with us and providing some protections to creators is just the incentive for them to share. Copyright claims may surely be out of control, and fair use under severe attack from all sides, but it is essential that fairness rules the day. Consumers cannot get everything for free and authors and copyright owners need to embrace new ways of doing business and models for delivering content access in a seamless-experience manner at a price point people generally can accept and even enjoy.

by W.R. Samuels

As you surely have heard before, the time for change is upon us. Well, ICANN, the group that coordinates the Internet’s naming system, is really going to make that change. The Internet already has changed people’s lives around the world, and according to Tina Dam, Senior Director of Internationalized Domain Names at ICANN, we are about to see "…the biggest technical change to the Internet’s addressing system¼in many years." That is, the Internet naming system soon will expand to include domains comprised of local language characters. In the coming months we will begin to see Internet addresses in Chinese, Arabic, Thai, and other alphabets. This begs the question, How do you say or spell Best Buy in Chinese? I think it’s 最好购买. At least what Google Translate tells me.>

Whether or not that translation is correct, domain name expansion could be a trademark owner’s greatest nightmare, already having to deal with cybersquatters and others whose only tools up to now had been Latin characters. So, how does ICANN plan to address these trademark issues? Well, it proposes what it calls the Uniform Rapid Suspension (URS) Procedure, which is an expedited process to provide trademark holders with a rapid take-down of infringing sites in clear cut instances of trademark abuse. While the standard generally would be the same as the already existing Uniform Domain-Name Dispute-Resolution Policy (UDRP), trademark holders would have a higher burden of proof to meet under the new procedure. Trademark holders would have to show (1) that the registered domain name is identical or confusingly similar to a mark in which the Complainant (2) holds a valid registration issued by a jurisdiction that conducts a substantive examination of trademark applications prior to registration; and (3) that the Registrant has no legitimate right or interest to the domain name and; (4) the domain was registered and is being used in bad faith. As these matters develop there we will see how the procedures will be implemented and surely will merit commentary in the future.

What we do know now, however, is that avoiding an issue in the future is always the best policy. Businesses and others should prepare for the upcoming Internet name expansion, secure newly available domains, and capitalize on that virtual real estate ICANN will make available. Develop a plan and make a domain name wish list, consider your target audience and the language(s) it speaks, and weigh the factors relevant to you in making that list.

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With convenient offices in midtown Manhattan, W.R. Samuels Law PLLC assists clients internationally and throughout New York County, including Manhattan, Queens, and Brooklyn.

This Web site contains attorney advertising. Prior results do not guarantee a similar outcome nor should any statements or representations made on this Web site be construed as a guarantee or prediction of outcome or result. The Web site content is for general informational purposes only and is not legal advice nor should it be relied upon as legal advice. Moreover nothing in this Web site is intended to create an attorney-client relationship. Protecting intellectual property assets and proprietary information can be important for moving your business forward and being competitive in the marketplace. Understand your options and develop a plan that fits your business needs.